Recently there has been a progressive increase in the number of filings, by third parties, of recommendations or observations with the Italian Patent and Trademark Office (IPTO) regarding applications for patents for industrial inventions or for Supplementary Protection Certificate (SPC) owned by other parties. These are situations in which the third party, who is aware of information or is in possession of documents which, in his or her opinion, could damage the validity of the applied-for patent or SPC in whole or in part, decides to submit that information to the IPTO for evaluation and in order to result in the refusal or at least the limitation of the applications filed.

This procedure is provided for in other patent systems, most notably the European Patent Convention. However, it is not regulated by Italy’s Intellectual Property Code (IPC) for patents and SPCs.

The position of the IPTO on such submissions has always been to not consider the content of observations filed by third parties, and only forward them to the holder of the application for his or her knowledge, giving him or her an opportunity to reply. Both the third-party observations and the application holder’s reply, if any, are then simply placed in the IPTO file, without being examined and therefore without influencing the grant procedure.

Recently, the IPTO clarified their reasons for taking this position. In the first place, the Office notes that the only cases in which the IPC allows third parties to take part in the administrative procedure of examining and granting applications are for trademarks and for new plant varieties. For trademarks, the law allows third parties to file observations against the eligibility for registration of the trademark, while remaining uninvolved with the actual registration procedure itself (unless the third party files an opposition to the grant of the trademark, in which case the third party becomes a party to the procedure that ensues). If observations are filed, then these, if deemed relevant, must be sent by the IPTO to the holder of the trademark application, who may reply with his or her own deductions. The observations and the trademark application holder’s deductions (if any) are then examined by the Office which, on the basis thereof, may decide to reject the application. Similarly, for new plant varieties, the IPC again allows third parties to lodge observations and consequently requires the IPTO to forward these observations to the applicant, setting a term for the reply. In this case too, the observations and the applicant’s reply must be evaluated both by the IPTO and by the Ministry of Agricultural and Forestry Policy.

Considering the above, the IPTO maintains that the fact that there are no such provisions in the IPC for patent applications or SPC applications is the result of a conscious choice by the legislature, which cannot be disregarded by applying by analogy to patents and SPCs what is explicitly allowed by the IPC for other institutions only.

The IPTO furthermore maintains that, since patent law must be considered as a special law system, they cannot even refer to the law on administrative procedure, which offers the general possibility for anyone who has an interest, or who fears being the target of a tort from a measure requested by another party, to intervene in the administrative procedure of granting such measure, by filing documents or written briefs that, if pertinent, must be evaluated by the administration.

The IPTO will therefore continue to accept observations submitted by third parties on an application for a patent or for an SPC, since nothing in the IPC prohibits it; but the Office will not assess the content of such observations until such time as the institution is regulated by legislation. The sole exception, for SPCs, is the possibility for a third party to report the withdrawal of the marketing authorization of a product covered by an SPC, which report could bring to the extinction of the SPC in question.

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